Newsflash! EPO announces that it does not require search results from priority applications filed at the USPTO, JPO and UKIPO

From Marks & Clerk — This is a correction to the post of December 10th.

Late yesterday – December 9, 2010 – a decision of the President of the European Patent Office (EPO) was posted on the EPO website confirming that the search results from a priority application filed at the US Patent Office (USPTO), Japan Patent Office (JPO) or UK Intellectual Property Office (UKIPO) do not need to be filed by the applicant at the EPO to satisfy the requirements of new Rule 141(1). The Rule 141(1) requirement is automatically satisfied due to arrangements between the EPO and USPTO/JPO/UKIPO.

Under Rule 141(1), from January 1, 2011, the EPO requires the search results of a priority application to be filed at the EPO on filing of the EP application or “without delay” once the results become available. The EPO hoped to arrange automatic transfer of these documents with some patent offices so that the applicant would not need to file the documents themselves. Such an arrangement has been reached with the USPTO, JPO and UKIPO. This arrangement is effective from January 1, 2011 and so will apply to all EP applications filed under new Rule 141(1).

It is important to note that this arrangement only exists with the USPTO, JPO and UKIPO. If an EP application claims priority from one or more applications filed with an office other than the USPTO, JPO or UKIPO, the applicant will still need to file the documents under Rule 141(1). Even if a US IDS has been filed at the USPTO, it will still be necessary to file search results at the EPO if at least one of the priority applications was filed at an office other than the USPTO, JPO or UKIPO.

For the EP applications where we still need to file the search results from the priority application, we need to file the search report or exam report issued by the patent office handling the priority application. We cannot file a letter explaining the content of the search/examination report, the EPO requires the actual document issued by the patent office.

In addition to requiring the search results of the priority application, the EPO (under Rule 141(3)) can ask for prior art taken into consideration in national or regional patent proceedings and concerning an invention to which the European patent application relates. The above agreement between the EPO and USPTO/JPO/UKIPO does not affect this additional request for information. However, if this additional information is required, the EPO will send a communication setting a time limit for response.

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